Overview
Jeffrey A. Pade is an intellectual property litigator with over 25 years of experience in all phases of trade secrets and other intellectual property disputes. He directs complex civil and criminal trade secrets litigations concerning diverse technologies for clients around the globe, and represents clients in internal trade secrets audits and related forensic investigations, as well as trade secrets compliance initiatives. Mr. Pade’s current representations include offensive and defensive trade secrets litigations and arbitrations, internal trade secrets investigations, and pre-litigation counseling for both domestic and foreign clients. He is a frequent speaker and author on trade secrets issues, and is an active member of the Sedona Conference’s working group on trade secrets. Mr. Pade also teaches Trade Secrets Law at The George Washington University Law School.
Recognitions
- Ranked Band 1 in World Intellectual Property Review’s 2023 Global Trade Secrets Rankings:
- Pade is “extremely knowledgeable, has first-hand experience and has been doing it for decades, both litigation and advice work.”
- Recommended by The Legal 500 for Trade Secrets Litigation and Non-contentious matters, with commentary:
- “Jeffrey Pade is clearly a subject matter expert in this area, very approachable and easy to communicate with.”
- “In the field of trade secrets, there are few practitioners who you can label as true specialists, in the sense that they spend almost all of their time working on those matters. At Paul Hastings there are several, but Victoria Cundiff and Jeff Pade stand out as real scholars as well as brilliant strategists.
- "We dealt primarily with Jeff Pade. He is an excellent team leader. Jeff has a strong focus on intellectual property disputes, but he also has experience of conducting internal investigations at pre-litigation stages. He is very good at handling complex issues.”
- IAM Patent 1000: “Jeff Pade is an authority when it comes to trade secret litigation.”
- Pade was named in Asian-Mena Counsel for a trade secrets litigation victory on behalf of Lotte Chemical Corporation, which garnered recognition in The Legal Times, Seoul Economic Daily, etoday, and Korean Economic Daily.
- Pade’s representation of Kolon Industries in its six-year, billion-dollar, international trade secrets litigation was instrumental in the firm's recognition by Chambers, Legal500, and The American Lawyer as a leading IP practice.
Education
- University of New Hampshire School of Law, J.D., 1996
- University of Wisconsin Madison, B.S.M.E., 1992 (Pi Tau Sigma)
Representations
- International Services Provider: Current plaintiff’s counsel on alternative strategies and parallel efforts to enforce trade secrets and related intellectual property rights across multiple international jurisdictions.
- Domestic Pharmaceutical Company: Current plaintiff’s counsel on strategies to enforce trade secrets against international actors.
- Domestic Fabricator: Current plaintiff’s counsel in parallel district court and arbitration proceedings involving allegations of trade secret misappropriation, patent infringement, unfair competition, tortious interference, racketeering, antitrust, and correction of inventorship.
- Domestic and International Services Provider: Current defense counsel in an international dispute with (i) U.S. clams of copyright infringement, trade secret misappropriation, unfair competition, false advertising, unjust enrichment, and breach of fiduciary duty; and (ii) Chinese claims of copyright infringement trade secrets misappropriation.
- International Pharmaceutical Company: Current defense counsel in international know-how and trade secrets litigation and arbitration arising from a soured deal involving next-generation drugs.
- Foreign Pharmaceutical Company: Current defense counsel in an international arbitration concerning billions of dollars in alleged know-how and trade secret royalties.
- Domestic Semiconductor Fabricator: Provided strategic advice on the potential enforcement of trade secrets in ITC and district court actions.
- Domestic and International Services Provider: Directed clean-room development strategies.
- Foreign and Domestic Services Provider: Led and resolved an offensive, international and multi-district dispute that arose out of a failed business collaboration. The complex U.S. parallel actions included claims of trade secret misappropriation, breach of contract, fraud, patent infringement, and trademark infringement.
- Domestic Medical Device Company: Directed early stage district court and mediation strategies in a multi-district trade secrets, patent, and breach of contract dispute.
- International Digital Services Provider: Directed and resolved an offensive trade secrets strategy against international actors’ misuse of proprietary technology, including claims of breach of contract, tortious interference with contract, tortious interference with prospective business relations, fraud based on intentional misrepresentation, fraud based on non-disclosure, misappropriation of trade secrets, violation of the Racketeer Influence and Corrupt Organization Act, and contributory trademark infringement.
- Foreign Fabricator: Directed and resolved the defense of a multi-year, multi-district, and complex international dispute involving claims of trade secrets misappropriation, patent infringement, and breach of contract alleged against a large Korean conglomerate.
- Foreign Fabricator: Advised a Chinese conglomerate on potential civil and criminal trade secrets inquiries.
- Medical Company: Advised on compliance with government regulatory requirements to maintain trade secrets status of medical products.
- Foreign Fabricator: Won a complete dismissal, with prejudice, of a complex international trade secrets action against a large Korean conglomerate, in Federal District Court in California. The dismissed claims involved alleged theft of trade secrets under New York and California law, purported Lanham Act violations, and allegations under the Racketeer Influenced and Corrupt Organizations Act premised on trade secret theft.
- Domestic Fabricator: Directed a complex international trade secrets investigation concerning theft of core corporate trade secret assets across multiple jurisdictions. The investigation required computer forensic analysis in multiple countries, involved issues of domestic and foreign trade secret laws (both civil and criminal), covered multiple actors, and spanned many years. Jeff successfully resolved the investigation without resort to formal litigation.
- Foreign Fabricator: Directed an overseas internal trade secrets investigation to assess and limit potential trade secrets exposure. The investigation required intensive foreign forensics work, involved multiple actors, lasted many years, and was resolved without lawsuit or liability.
- Foreign Fabricator: Directed an audit and overhaul of a corporate conglomerate’s overlapping intellectual property and related corporate polices, including drafting, revising and implementing document retention, confidentiality, trade secret, and security policies and procedures.
- Financial Institution: Served as strategic counsel concerning an offensive and domestic trade secrets dispute, including directing local counsel on a state UTSA claim. The case successfully settled in favor of the plaintiff.
- Kolon Industries: Jeff served as the lead lawyer on technical defenses of Kolon Industries in its massive and storied trade secrets dispute with DuPont and the U.S. Department of Justice. The case involved a multi-billion dollar dispute over aramid fiber technology, in which DuPont claimed Kolon stole crown jewel trade secret information concerning Kevlar. The magnitude of claimed damages, along with DuPont’s request for a shut-down injunction, rendered the case among the largest and most intensely defended trade secret matters ever to be litigated in a U.S. court. The case spanned more than six years of active litigation, and involved multiple civil litigations, appeals, criminal investigation, and prosecution by the U.S. government, criminal investigations in South Korea, enforcement litigations, and numerous other issues involving antitrust, unfair competition, and breach of contract claims. Following an initial $930 million jury verdict in favor of DuPont in the first civil trial, Kolon appealed to the Fourth Circuit, who vacated the verdict in its entirety and ordered a new trial. Following remand, and prior to the impending trial of related criminal charges, Kolon successfully orchestrated a global settlement agreement with DuPont and a related plea agreement with the Department of Justice.
- Foreign Fabricator: Defended a civil trade secrets dispute in the U.S. where a competitor alleged theft of the competitor’s trade secrets on memory technologies by hiring the competitor’s former employee.
- Lotte Chemical (previously Honam Petrochemical): Won a complete dismissal, with prejudice, of a complex international trade secrets action against Lotte Chemical, a large Korean conglomerate, in Federal District Court in Alabama concerning carbon-fiber preforms used in the manufacture of high-performance disc brakes. The dismissed claims involved alleged theft of trade secrets, breach of contract, fraud, interference with contractual and business relations, and conspiracy.
- UBS and Barclays (previously part of Lehman Brothers): Defended UBS and Barclays in a patent action in the Northern District of Illinois concerning automated trading systems.
- Foreign Chemical Company: Avoided two lawsuits by developing and executing strategies causing potential plaintiffs to drop separate allegations of patent infringement.
- Media Processing Company: Developed a comprehensive and highly successful litigation and patent prosecution strategy in preparation for multiple offensive patent suits (currently on-going).
- Chicago Mercantile Exchange: Represented Chicago Mercantile Exchange in defensive and declaratory judgment patent infringement actions involving several patents relating to electronic trading of securities in the Northern District of Illinois and Delaware.
- Moser Baer: Defended Moser Baer in a multi-jurisdictional patent and commercial contract dispute concerning optical and magnetic storage media; ultimately obtained a critical win on a dispositive issue on appeal.
- Shuffle Master: Defended Shuffle Master in an antitrust and patent dispute concerning various casino games.
- Applied Materials: Successfully represented Applied Materials in the Northern District of California in a multi-faceted, offensive patent dispute involving combined litigation, prosecution, and reexamination strategies on wafer inspection systems.
- eBay: Represented eBay in a Federal Circuit appeal, a U.S. Supreme Court appeal, remand litigation before the Eastern District of Virginia, and reexamination proceedings before the U.S. Patent and Trademark Office concerning automated auction and payment systems.
- Semitool: Represented Semitool in an offensive and defensive patent action in the Northern District of California concerning wafer cleaning stations and single-wafer processors, including spray acid, spray solvent, and ECD Cu plating tools.
- S. Equipment Fabricator: Filed and resolved a declaratory judgment patent action against a foreign-based golf club manufacturer.
- S. Manufacturer: Defended a patent infringement action concerning molten-metal manufacturing processes.
- Foreign Fabricator: Defended allegations of patent infringement in an ICC International Arbitration.
Engagement & Publications
- Professorial Lecturer in Law, The George Washington University Law School, Trade Secrets Law & Practice Fall 2017-2022.
- Dialogue Leader, Global Trade Secrets Litigation Issues, The Sedona Conference on Global Intellectual Property Litigation, London, UK, January, 2023.
- Contributing Editor, Working Group 10 & 12 Commentary on Cross-Border Discovery in U.S. Patent and Trade Secret Cases (Stage Two), January, 2023.
- Author, Strategies for Foreign Entities to Reduce the Risk of US Trade Secrets Litigation, World Intellectual Property Review, January, 2023.
- Author, Offensive and Defensive Trade Secrets Internal Investigations, TRTCLE, January, 2023.
- Speaker, Trade Secrets Internal Investigations, TRT CLE, December, 2022.
- Quoted, “How US Counsel Win And Strike Down Large Trade Secret Damages,” Managing IP, November, 2022.
- Speaker, Key Developments in International Patent & Trade Secret Law & Policy, International IP Practice Seminar, Center for Intellectual Property, Information & Privacy Law, University of Illinois Chicago, October 2022.
- Panel speaker, Why Should Lawyers Consider Criminal Issues When Litigating a Civil Trade Secret Dispute, Advanced Trade Secrets 2022: New Risks, New Challenges, New Ideas, Practicing Law Institute, San Francisco, CA, October 2022.
- Author, Jeff Pade & Anand Patel (U.S. Department of Justice—Criminal Division), Criminal Considerations In Trade Secrets Disputes, The Intellectual Property Strategist & ALM Law.com, Practicing Law Institute, October 2022.
- Dialogue Leader, Trade Secrets Across Borders: A World of Emerging Issues, The Sedona Conference, Working Group 12 Annual Meeting on Trade Secrets, Reston, VA, September 2022.
- Author, Jeff Pade & Lindsey Dieslman, Enforcement Update: U.S. Courts Demonstrate Reluctance to Extend Application of Chinese Data Security and Privacy Laws In Civil Discovery, ALM Law.com, Law Journal Newsletters, June 2022.
- Dialogue Leader, Trade Secret Issues Across International Borders, The Sedona Conference, Working Group 12 on Trade Secrets, Denver, CO, May 2022.
- Presenter, IP Academy, Trade Secrets Developments and Strategies, March 2022.
- Contributing Editor, Working Group 12 on Trade Secrets, The Sedona Conference, Framework for Analysis on Trade Secret Issues Across International Borders, 23 SEDONA CONF. J. 909 (2022).
- Panel Speaker, Trade Secret Issues Across International Borders: Extraterritorial Reach, Sedona Conference on Developing Guidelines for Trade Secret Issues, Working Group 12, June 2021.
- Panel speaker, Trade Secret Misappropriation in the International Arena, Advanced Trade Secrets 2020: New Risks, New Challenges & Emerging Solutions, Practicing Law Institute, San Francisco, CA, October 2020.
- Author, Jeff Pade, Ian Paquette & David Valente, Trade Secrets Litigation With Foreign Actors, Practicing Law Institute, September 2020.
- Dialogue Leader, Trade Secret Issues Across International Borders, Annual Meeting of the Sedona Conference, Working Group 12 on Trade Secrets, Charlotte, NC, November 2019.
- Panel speaker, Trade Secrets and the Trade Wars (Extra-territorial reach of Defend Trade Secrets Act as applied to Chinese nationals), The 2nd Annual Berkeley-Tsinghua Conference on Transnational IP Litigation, The Trade Wars and IP Litigation: Strategies and Tactics, University of California Berkeley School of Law, October 2019.
- Author, Jeff Pade and Thomas Counts, Extraterritorial Limits of Economic Espionage and Defend Trade Secrets Act Claims, Practicing Law Institute, September 2019.
- Panel speaker, Litigating the Big Trade Secrets Case: Special Challenges in Complex Trade Secrets Disputes, Trade Secrets 2019, What Every Lawyer Should Know, Practicing Law Institute, San Francisco, CA, October 2019.
- Panel speaker, Trade Secrets, Cross Border Disputes, and Global Best Practices, The Daily Journal’s Second Annual Trade Secrets Conference, Palo Alto, CA, September 2019.
- Coauthor, “Federal Courts Shed Light On Extraterritorial Reach Of DTSA,” Law360, August 8, 2019.
- Quoted, "Trade secret theft: approach US prosecutors with caution," Global Investigations Review, June 18, 2019.
- Speaker, Safeguarding Trade Secrets Across Borders, Trade Secrets 2018, What Every Lawyer Should Know, Practicing Law Institute, San Francisco, CA, November 2018.
- Panel speaker, Trade Secret Issues Across International Borders, The Inaugural Meeting of the Sedona Conference, Working Group 12 on Trade Secrets, Los Angeles, CA, November 2018.
- Presenter, IP Academy, International Trade Secrets Developments and Strategies, March 1, 2018.
- Author, Jeff Pade and Thomas Counts, Trade Secrets Litigation Concerning Foreign Acts, International Association of Defense Counsel, Defense Counsel Journal, Volume 85, No. 1, January 2018.
- Panel speaker, Trade Secrets 2017, What Every Lawyer Should Know, Practicing Law Institute, New York, NY, October, 2017 and San Francisco, CA, November 2017.
- Guest Speaker, Making A Federal Case Out of It ... When Trade Secrets Walk Out the Door, Association of Corporate Counsel, August 2017.
- Guest speaker, Trade Secrets and Cross-Border Commercial Transactions, ABA Section of International Law 2017 Spring Meeting, Washington DC, April 2017.
- Group Author, The Global Harmonization of Trade Secret Law: The Convergence of Protections for Trade Secret Information in the United States and European Union, European Intellectual Property Review (E.I.P.R.), Volume 38, Issue 12, 2016.
- Author, Jeff Pade, Anand B. Patel, Victoria Cundiff and Bradford Newman, The Global Harmonization of Trade Secret Law: The Convergence of Protections for Trade Secret Information in the United States and European Union, International Association of Defense Counsel, Defense Counsel Journal, Volume 84, No. 4, October 2016.
- Guest speaker on Transnational Issues in U.S. Trade Secrets Litigation, International Federation of Intellectual Property Attorneys (FICPI), 16th Open Forum, St. Petersburg, Russia, October 2016.
- Anand B. Patel, Jeff Pade, Victoria Cundiff & Bradford Newman, A Quick Guide Comparing the Defend Trade Secrets Act and the EU Trade Secrets Directive, Client Alert from Paul Hastings, June 1, 2016.
- Author, Critical Issues for Foreign Defendants in International Trade Secrets Litigation – Part II, Pratt’s Privacy & Cybersecurity Law Report, June 2016.
- Daniel Prince, Jong Han Kim, Jeff A. Pade, and Mark D. Pollack, “Obama Out?” Not So Fast. President Obama Presented With Legislation that Would Create a Federal Civil Remedy for the Misappropriation of Trade Secrets, Client Alert from Paul Hastings, May 4, 2016.
- Author, Critical Issues for Foreign Defendants in International Trade Secrets Litigation – Part I, Pratt’s Privacy & Cybersecurity Law Report, May 2016.
- Guest speaker, International Trade Secrets Issues, International Association of Defense Counsel’s Midyear Meeting, Pebble Beach, CA, February 2016.
- Panel moderator, Successfully Mitigating Litigation Risks, U.S. Litigation Forum 2015, Seoul, Korea, October 2015.
Involvement
- Represents U.S. veterans in multiple pro bono matters.
- Member, American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association, and American Society of Mechanical Engineers.
- Member of the State Bars of the District of Columbia, Virginia, and Wisconsin.
- Member of the U.S. Court of Appeal for the Federal Circuit, the U.S. District Court of the Eastern District of Virginia, and the United States Patent and Trademark Office.